Russian Civil Code 4 part

CHAPTER 72. PATENT LAW

2. The following rights shall belong to the author of an invention, utility model, or industrial design:

1) the exclusive right;

2) the right of authorship.

3. In cases provided for by the present Code, other rights also belong to the author of an invention, utility model, or industrial design including the right to obtain a patent, the right to remuneration for the use of an employee’s invention, utility model, or industrial design.

Article 1346. Validity of Exclusive Rights to Inventions, Utility Models, and Industrial Designs within the Territory of the Russian Federation

Within the territory of the Russian Federation exclusive rights shall be recognized to inventions, utility models, and industrial designs certified by patents granted by the federal executive authority for intellectual property or by patents valid within the territory of the Russian Federation by virtue of the international treaties of the Russian Federation .

The author of an invention, utility model, or industrial design shall be deemed a citizen whose creativity has led to the creation of such a result. The person indicated as the author in patent application for an invention, utility model, or industrial design shall be deemed the author of the invention, utility model, or industrial design, unless it is proved otherwise.

1. Citizens who have made an invention, utility model, or industrial design by joint creative work shall be deemed the joint authors.

2. Each of the co-authors shall have the right to use the invention, utility model, or industrial design at his discretion, unless an agreement among them has provided otherwise.

3. The rules of Paragraph 3 of Article 1229 of the present Code shall be applied to inter relations of the co-authors connected with sharing the income received from use of an invention, utility model or industrial design and with the disposition of the exclusive right to an invention, utility model, or industrial design.

The disposition of the right to obtain a patent for an invention, utility model, or industrial design shall be fulfilled by the co-authors jointly.

4. Each of the co-authors shall independently have the right to enforce his rights to the invention, utility model or industrial design.

Article 1349. Objects of Patent Rights

1. The objects of patent rights shall be the results of intellectual activity in the scientific and technical area that meet the requirements, provided for by the present Code, for inventions and utility models and the results of intellectual activity in the area of artistic design that meet the requirements for industrial designs set forth by the present Code.

2. The provisions of the present Code extend to inventions containing information constituting a state secret (the secret inventions), unless otherwise provided for by the special provisions of Articles 1401-1405 of the present Code and by legal acts issued in accordance with them.

3. Legal protection under the present Code shall not be granted to utility models and industrial designs containing information constituting a state secret.

4. The following shall not be the objects of patent rights:

1) methods of cloning of a human being;

2) methods of modification of the genetic integrity of cells of the embryonic line of a human being;

3) use of human embryos for industrial and commercial purposes;

4) other proposals that are contrary to public interest, principles of humanity and morality.

Article 1350. Conditions of Patentability of an Invention

1. A technical solution in any area related to a product (including a device, substance, microorganism strain, cell culture of plants or animals) or method (process of affecting a material object using material means) shall be protected as an invention. An invention shall be granted the legal protection if it is new, involves an inventive step, and is industrially applicable.

2. An invention shall be deemed new if it is not anticipated by prior art

An invention shall involve an inventive step, if having regard to the state of the art, it is not obvious to a person skilled in the art.

The state of the art shall include any information published anywhere in the world, and made available to the public, before the priority date of the invention. When the novelty of an invention is determined, the state of the art shall also include, under condition of their earlier priority, all applications filed in the Russian Federation by other applicants for inventions and utility models, to the documents of which any person is entitled to get access as per Paragraph 2 of Article 1385 or Paragraph 2 of Article 1394 of the present Code, and inventions and utility models that have been patented in the Russian Federation.

3. Disclosure of information relating to an invention by the author of the invention, applicant, or other person having received this information directly or indirectly from them, that made information on the essence of the invention public shall not be a circumstance precluding the recognition of the patentability of the invention if a patent application for the invention has been filed with the federal executive authority for intellectual property within six months from the date of disclosure of the information. The burden of proof that the circumstances have taken place by virtue of which the disclosure of information does not prevent the recognition of the patentability of the invention shall be on the applicant.

4. An invention shall be deemed industrially applicable if it can be used in industry, agriculture, public health, other branches of the economy, or the social sphere.

4) rules and methods of games and for intellectual or business activity;

5) computer programs;

6) ideas on presentation of information.

In accordance with the present Paragraph these objects shall not be deemed inventions only if the patent application refers to the above subject matter per se.

6. Legal protection as inventions shall not be granted to:

1) varieties of plants, breeds of animals and biological methods of obtaining thereof with the exception of microbiological methods and products obtained by the use of such methods;

2) layout-designs (topographies) of integrated circuits.

Article 1351. Conditions of Patentability of a Utility Model

1. A technical solution relating to a device shall be protected as a utility model.

A utility model shall be granted legal protection if it is new and industrially applicable.

2. A utility model shall be new if the sum of its essential features is not anticipated by prior art.

The state of the art shall include any kind of information published anywhere in the world and made available to the public, before the priority date of the claimed utility model, concerning devices of similar function and the use thereof in the Russian Federation. The state of the art shall also include, on condition of their earlier priority, all applications filed in the Russian Federation by other applicants for inventions and utility models, to the documents of which any person is entitled to get access as per Paragraph 2 of Article 1385 or Paragraph 2 of Article 1394 of the present Code, and inventions and utility models that have been patented in the Russian Federation.

3. Disclosure of information relating to a utility model by the author of the utility model, applicant, or other person having received this information directly or indirectly from them, that made information on the essence of the utility model public shall not be a circumstances precluding the recognition of the patentability of the utility model if an application for the grant of a patent for the utility model has been filed with the federal executive authority for intellectual property within six months from the date of disclosure of the information. The burden of proof that the circumstances have taken place by virtue of which the disclosure of information does not prevent the recognition of the patentability of the utility model shall be on the applicant.

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4. A utility model shall be deemed industrially applicable if it can be used in industry, agriculture, public health, other branches of the economy, or the social sphere.

1. An artistic and design presentation of an article, manufactured industrially or by artisans, that defines its outward appearance, shall be protected as an industrial design.

An industrial design shall be granted legal protection if in its essential features it is new and original.

The essential features of an industrial design shall include features determining the esthetic and/or ergonomic characteristics of the outward appearance of the article, including shape configuration, ornament, and combination of colors.

2. An industrial design shall be deemed new if the sum of its essential features manifested in representation of the article and included in the list of essential features of the industrial design (Paragraph 2 of Article 1377) is not known from information generally available in the world before the priority date of the industrial design.

When determining the novelty of an industrial design all applications for industrial designs filed in the Russian Federation by other persons, provided they have earlier priority and to the documents for which any person is entitled to get access as per Paragraph 2 of Article 1394 of the present Code and industrial designs that have been patented in the Russian Federation, shall also be taken into account.

3. An industrial design shall be deemed original if its essential features are determined by the creative nature of the special aspects of the article.

4. Disclosure of information relating to an industrial design by its author, applicant, or other person having received this information directly or indirectly from them, that made information on the essence of the industrial design public shall not be a circumstance preventing the recognition of the patentability of the industrial design if an application for the grant of a patent for the industrial design has been filed with the federal executive authority for intellectual property within six months from the date of disclosure of the information. The burden of proof that the circumstances have taken place by virtue of which the disclosure of information does not prevent the recognition of the patentability of the industrial design shall be on the applicant.

5. Legal protection as an industrial design shall not be granted to:

1) solutions that are determined exclusively by the technical function of an article ;

2) solutions that relate to works of architecture (with the exception of minor architectural forms), industrial, hydro technical, and other stationary structures;

3) solutions that relate to objects of instable shape such as liquids, gaseous, dry substances and the like.

The exclusive right to an invention, utility model, or industrial design shall be recognized and protected subject to official registration of the respective invention, utility model, or industrial design on the basis of which the federal executive authority for intellectual property shall issue a patent for the invention, utility model or industrial design.

1. A patent for an invention, utility model or industrial design shall certify the priority of an invention, utility model, or industrial design, the authorship, and the exclusive right to an invention, utility model, or industrial design.

2. The protection of intellectual rights to an invention or utility model shall be granted on the basis of a patent and the scope of protection shall be determined by the claims contained in the patent for the invention or the utility model, respectively. The specification and drawings (Paragraph 2 of Article 1375, Paragraph 2 of Article 1376) may be used to interpret the claims for an invention or utility model.

3. Protection of intellectual rights for an industrial design shall be granted on the basis of a patent and the scope of protection shall be determined by the sum of its essential features as shown on the representation of the article and included in the list of essential features of an industrial design (Paragraph 2 of Article 1377).

Article 1355. State Incentives for the Creation and Use of Inventions, Utility Models and Industrial Designs

The State shall offer incentives for the creation and use of inventions, utility models, and industrial designs, by providing their authors, patent holders and licensees using the respective inventions, utility models, and industrial designs with benefits under the legislation of the Russian Federation.

§ 2. Patent Rights

Article 1356. The Right of Authorship to an Invention, Utility Model, or Industrial Design

The right of authorship, i.e., the right to be deemed the author of an invention, utility model or industrial design shall be an inalienable and nontransferable, including when assigning to a third person or conveying the exclusive right to an invention, utility model, or industrial design and in conferring another person the right to its use. A waiver of this right shall be void.

Article 1357. The Right to Obtain a Patent for an Invention, Utility Model, or Industrial Design

1. The right to obtain a patent for an invention, utility model or industrial design shall belong originally to the author of the invention, utility model, or industrial design.

2. The right to obtain a patent for an invention, utility model, or industrial design may be conveyed to another person (the legal successor) or may be transferred in the cases and on the grounds provided for by the legislation including within the framework of an universal legal succession or under the contract, including labor contract.

3. A contract on alienation of the right to obtain a patent for an invention, utility model or industrial design shall be concluded in a written form. Failure to observe the requirements of a written form shall entail invalidity of the contract.

4. Unless otherwise is provided for by the agreement of the parties of a contract on alienation of the right to obtain a patent for an invention, utility model, or industrial design, the risk of non-patentability shall be burned by the recipient of the right.

Article 1358. The Exclusive Right to an Invention, Utility Model, or Industrial Design

1. The exclusive right to use of an invention, utility model, or industrial design under Article 1229 of the present Code by any means not contrary to legislation (the exclusive right to an invention, utility model, or industrial design), including by the means provided for in Paragraphs 2 and 3 of the present Article shall belong to the patent holder. The patent holder may dispose the exclusive right to an invention, utility model, or industrial design.

2. The use of an invention, utility model or industrial design shall include in particular:

1) import into the territory of the Russian Federation, manufacturing, exploitation, offer for sale, sale, other introduction into civil circulation or the storage for such purposes of a product that incorporate the invention or utility model, or articles incorporating the industrial design.

2) performance of acts provided for by subparagraph 1 of the present Paragraph in respect to a product obtained directly by a patented process. If the product obtained by the patented process is new, an identical product shall be considered as derived from the patented process in the absence of proof of the contrary;

3) performance of the acts provided for by the subparagraph 2 of the present Paragraph in respect to a device, the functioning (use) of which in accordance with its purpose automatically involves a patented process;

4) performance of a process in which the invention is used, in particular by the application of this process.

3. An invention or utility model shall be deemed used in a product or process if the product contains or the process involves each feature of the invention or utility model stated in an independent claim contained in the claims for the invention or utility model, or a feature equivalent thereto that has become known as such in this art prior to performance in respect to the respective product or process of the actions provided for by Paragraph 2 of the present Article. An industrial design shall be deemed used in an article if such article contains all the essential features of the industrial design manifested in the representation of the article and stated in the list of essential features of the industrial design (Paragraph 2 of Article 1377).

In the event that the use of an invention or utility model involves also the use of all the characteristics listed in an independent claim of the claims contained in the patent of another invention or another utility model, and in the case of use of an industrial design, all the features included in the list of essential features of another industrial design, the other invention, the other utility model, or the other industrial design shall also be deemed used.

4. If the holders of a patent for single invention, single utility model, or single industrial design are two or more persons, the rules of Paragraphs 2 and 3 of Article 1348 of the present Code shall be respectively applied to relationships among them, regardless of whether or not any of the patent holders is the author of this result of intellectual activity.

Article 1359. Acts which Shall Not an Infringement of the Exclusive Right to an Invention, Utility Model, or Industrial Design

The performance of the following acts shall not constitute an infringement of the exclusive right to an invention, utility model, or industrial design:

1) use of a product incorporating the invention or utility model and use of a device incorporating an industrial design in the structure, in auxiliary equipment, or in the exploitation of transportation vehicles (river and marine, air, automobile, and railway transport) and space crafts of foreign states provided that such transportation vehicles or this space crafts are located within the territory of the Russian Federation, temporally or accidentally, and that the aforesaid product or device is used solely for the needs of transportation vehicles or space crafts. Such an acts shall not be recognized as an act of infringement of the exclusive right of the patent holder with respect to the transportation vehicles and space crafts of those foreign states that grant similar rights with respect to transportation vehicles and space crafts registered in the Russian Federation;

2) scientific research of a product or process incorporating an invention or utility model, or scientific research of a device incorporating an industrial design or the conduct of an experiment with such a product, process, or device;

3) use of an invention, utility model, or industrial design in emergency situations (natural calamities, catastrophes, accidents) provided that the patent holder is notified as soon as possible and payment to him a reasonable remuneration;

4) use of an invention, utility model, or industrial design for private, family, domestic, or other needs not related with business activity, if the purpose of such use is not to make profit or revenue;

5) occasional preparation in pharmacies based on physicians' prescriptions of medicaments using the invention;

6) import into the territory of the Russian Federation, utilization, offer for sale, selling, other introduction into civil circulation or storage for these purposes of a product, incorporating the invention or utility model or of a device, incorporating the industrial design if such product or device had been early introduced into civil circulation within the territory of the Russian Federation by the patent holder or by another person with the consent of the patent holder.

Article 1360. Use of an Invention, Utility Model, or Industrial Design in the Interests of National Security

In the interests of national security the Government of the Russian Federation shall have the right to permit the use of an invention, utility model, or industrial design without the consent of the patent holder provided that he is notified as soon as possible and payment to him a reasonable remuneration.

Article 1361. Right of Prior Use of an Invention, Utility Model, or Industrial Design

1. Any person who before the priority date of an invention, utility model or industrial design (Articles 1381 and 1382) had conceived and was using in good faith within the territory of the Russian Federation the identical solution or made the necessary preparations for such use shall have the right to proceed with that use gracious provided that the scope thereof is not extended (the right of prior use).

2. The right of prior use may be transferred to another person only together with the enterprise at which the use of identical solution or necessary preparations for use had been made.

1. If an invention or industrial design fails to be used or is insufficiently used by the patent holder during the four years from date of the issuance of a patent, or a utility model – during three years from the date of granting the patent, which leads to insufficient offer of respective goods, works or services on the market, any person willing and ready to use such invention, utility model, or industrial design, given the refusal of the patent holder to conclude with such a person a license contract on terms corresponding to common practice shall have the right to initiate a legal action against the patent holder for the granting of a compulsory simple (non-exclusive) license for the use within the territory of the Russian Federation of an invention, utility model, or industrial design. In the writ, this person shall indicate the proposed terms of the granting to him of such a license, including the scope of use of the invention, utility model, or industrial design, the amount, procedure, and terms of payments.

If the patent holder does not prove that nonuse or insufficient use by him of the invention, utility model, or industrial design is based on valid excuses, the court shall rule the granting of the license indicated in the first subparagraph of the present Paragraph and the terms of its granting. A total amount of payments for such a license shall be determined in the decision of the court on the level not lower than the cost of a license determined in similar cases.

The effect of a compulsory simple (nonexclusive) license may be terminated by judicial procedure on a suit initiated by the patent holder if the circumstances that resulted in granting of such a license cease to exist and their reappearance is unlikely. In such a case the court shall fix the time and procedure for termination of the compulsory simple (nonexclusive) license and of the rights that arose under this license.

Granting in accordance with the rules of the present Paragraph of a compulsory simple (nonexclusive) license for the use of an invention related to the semiconductor technology, shall be allowed exclusively for its noncommercial use in state, social or other public interests or for the purpose of changing the situation which in due course is considered to be violating the requirements of the anti-monopoly legislation of the Russian Federation.

2. If the patent holder cannot use the invention to which he has the exclusive right without infringing thereby the rights of the holder of another patent (the first patent) to an invention or utility model who has refused to conclude a license contract on terms corresponding to common practice, the patent holder shall have the right to initiate court action against the holder of the patent (the second patent) for the granting of a compulsory simple (nonexclusive) license for the use within the territory of the Russian Federation of the invention or utility model of the holder of the first patent. The terms of granting such a license proposed by the holder of the second patent, including the scope of use of the invention or utility model, the amount, procedure, and schedule of payments shall be indicated in the lawsuit. If this patent holder having the exclusive right to such a dependent invention proves that it is an important technical achievement and has a significant economic advantage over the invention or utility model of the holder of the first patent, the court shall rule the granting compulsory simple (nonexclusive) license. A right obtained under this license to use the invention protected by the first patent may not be transferred to other persons except in case of alienation of the second patent.

A total amount of payments for such a compulsory simple (nonexclusive) license shall must be determined in the decision court on the level not lower than the cost of a license determined in similar cases.

In the case of granting under the present Paragraph of a compulsory simple (nonexclusive) license, the holder of the patent for the invention or utility model, the right to use of which is granted on the basis of the aforesaid license shall also have the right to obtain a simple (nonexclusive) license for use of the dependent invention in connection with which the compulsory simple (nonexclusive) license was granted on terms corresponding to the common practice.

3. On the basis of the court ruling provided for by Paragraphs 1 and 2 of the present Article, the federal executive authority for intellectual property shall effect official registration of the compulsory simple (nonexclusive) license.

Article 1363. Validity Term of the Exclusive Rights to an Invention, Utility Model, and Industrial Design

1. The validity term of the exclusive right to an invention, utility model, or industrial design and of the patent certifying this right shall be counted from the filing date of the initial application for the grant of a patent with the federal of executive authority for intellectual property provided the meeting the requirements set forth by the present Code shall constitute:

twenty years – for inventions;

ten years – for utility models;

fifteen years – for industrial designs.

The exclusive right certified by a patent shall be enforced only after official registration of the invention, utility model or industrial design and grant of the patent (Article 1393).

2. If from the filing date of an application for the grant of patent for an invention relating to medication, a pesticide, or an agrochemical, the use of which requires duly granted permission, and until the date of granting the first permission for its application more than five years have elapsed, the validity term of the exclusive right to the respective invention and the patent certifying this right shall be extended upon request from the patent holder by the federal executive authority for intellectual property. The said validity term shall be extended for a period counted from the filing date of the application for grant of the patent for the invention to the date of receipt of the first permission for the use of the invention, minus five years. In such a case, the validity term of the patent for the invention may be extended for a period not exceeding five years.

The request for extension of the term shall be submitted by the patent holder during the validity term of the patent within six months from the date of receipt of the permission for application of the invention or date of patent grant, depending on which expires later.

3. The validity term of the exclusive right to a utility model and the patent certifying this right shall be extended by the federal executive authority for intellectual property upon request of the patent holder for a period indicated in the application but not exceeding three years, and of the exclusive right to an industrial design and of the patent certifying this right – for a period indicated in the application but not exceeding ten years.

4. The procedure for extending the validity term of a patent for an invention, utility model, or industrial design shall be established by the federal executive authority responsible for normative and legal regulation in the area of intellectual property.

5. The validity of the exclusive right to an invention, utility model, or industrial design, and of the patent certifying this right shall be deemed invalid or pre-term terminated on the basis and by virtue of the procedure provided for by Articles 1398 and 1399 of the present Code.

Article 1364. Falling of an Invention, Utility Model, or Industrial Design into Public Domain

1. Upon the expiration of the validity term of the exclusive right, an invention, a utility model, or an industrial design shall fall into public domain.

2. An invention, utility model or industrial design that has fall into public domain shall be used freely by any person without any consent or permission whatsoever and without the payment of remuneration for use.

§ 3. Disposition of the Exclusive Right to an Invention, Utility Model or Industrial Design

Article 1365. Contract on Alienation of the Exclusive Right to an Invention, Utility Model, or Industrial Design

Under a contract on alienation of the exclusive right to an invention, utility model, or industrial design (a contract on alienation of the patent), one party (the patent holder) transfers or undertakes commitment to transfer the exclusive right owning by him to the respective complete results of intellectual activity to the other party - the recipient of the exclusive right (the recipient of the patent).

Article 1366. Public Offer to Conclude a Contract on Alienation of the Patent for an Invention

1. An applicant who is the author of an invention, when filing an application for grant of a patent for the invention may attach to the materials of the application a declaration to the effect that in the event of patent grant he shall be committed to conclude a contract on alienation of the patent under the terms, corresponding to common practice, with any citizen of the Russian Federation or Russian legal entity who first declared such a willingness and notified this to the patent holder and the federal executive authority for intellectual property. Where such a declaration is submitted, the patent fees stipulated under the present Code shall not be charged from the applicant with respect to the application for the grant of a patent for the invention or the patent grant based on such an application.

The federal executive authority for intellectual property shall publish o notice on such declaration in the official gazette.

2. A person concluding a contract on alienation of a patent for an invention with the patent holder on the basis of his declaration under Paragraph 1 of the present Article, shall be obligated to pay all the patent fees, from which the applicant (or the patent holder) was relived. Further patent fees shall be paid as per the established procedure.

To get the contract on alienation of the patent registered by the federal executive authority for intellectual property, the request for the registration of the contract shall be supported by a document confirming the payment of all patent fees from which the applicant (or the patent holder) was relieved.

3. In the event that within two years from the date of publication of notice on the grant of a patent for the invention with respect to which the declaration under Paragraph 1 of the present Article was submitted, failure to receive any written notice on the wish to conclude a contract on alienation of the patent by the federal executive authority for intellectual property, the patent holder may submit to the said federal authority a request for the withdrawal of his declaration. In such a case, the patent fees provided for by the present Code, from the payment of which the applicant (or patent holder) was relieved, shall be paid. Further patent fees shall be paid as per established procedure.

The federal executive authority for intellectual property shall publish in the official bulletin a notice on the withdrawal of the declaration under Paragraph 1 of the present Article.

Article 1367. License Contract on Granting the Right to Use an Invention, Utility Model, or Industrial Design

Under a license contract one party - the patent holder (the licensor) grants or undertakes commitment to grant to the other party (the licensee) within the limits under the contract the right to use an invention, utility model, or industrial design certified by a patent.

Article 1368. Open License to an Invention, Utility Model, or Industrial Design

1. The patent holder may submit to the federal executive authority for intellectual property a statement concerning the possibility of granting to any person the rights to use an invention, utility model, or industrial design (an open license).

In this case the amount of the patent fee for maintenance of the patent for an invention, utility model, or industrial design shall be reduced by fifty percent starting from the year following the year of publication by the federal executive authority for intellectual property of notice on the open license.

The terms of the license under which the right to use an invention, utility model, or industrial design may be granted to any person shall be notified by the patent holder to the federal executive authority for intellectual property, which shall publish at the expense of the patent holder the respective notice on the open license. The patent holder shall be obligated to conclude with a person who has expressed the willingness to use the aforesaid invention, utility model, or industrial design, a license contract under the terms of a simple (non-exclusive) license.

2. If the patent holder in the course of two years from the date of publication of a notice on an open license fails to receive any written proposals to conclude of a license contract on the terms under his declaration, on the expiration of two years he may submit to the federal executive authority for intellectual property a request for the withdrawal of his declaration on an open license. In this case the maintenance patent fee patent shall be paid for the whole period following the date of publication of notice on the open license and in the future shall be paid in full. The said federal authority shall publish a notice on withdrawal of the declaration in the official gazette.

Article 1369. Form and Official Registration of Contracts for the Disposition of the Exclusive Right to an Invention, Utility Model, and Industrial Design

A contract on the alienation of a patent, license contract, and other contracts by means of which the disposition of the exclusive right to an invention, utility model, or industrial design is effected shall be concluded in written form and shall be registered by the federal executive authority for intellectual property.

§ 4. An Invention, Utility Model, or Industrial Design Created in Line of Duty while Performing Labor Task or the Fulfillment of Work under a Contract

1. An invention, utility model, or industrial design created by an employee in line of his employment duties or of a specific task set by the employer shall be deemed an employee’s invention, employee’s utility model, or employee’s industrial design, respectively.

2. The right of authorship to the employee’s invention, employee’s utility model or employee’s industrial design shall belong to the employee (to the author).

3. The exclusive right to the employee’s invention, employee’s utility model, or employee’s industrial design and the right to obtain a patent shall belong to the employer unless otherwise provided for by a labor or other contract between the employee and the employer.

4. In the absence in the contract between the employer and employee of the provisions to the contrary (Paragraph 3 of the present Article) the employee shall notify the employer in writing of the creation in connection with the performance of his employment obligations or of a specific task set by the employer of any results with respect to which granting of legal protection is capable.

Where the employer within four months from the date of notification by employee fails to file an application for the grant of a patent for the respective employee’s invention, employee’s utility model, or employee’s industrial design with the federal executive authority for intellectual property, fails to transfer the right to obtain a patent for an employee’s invention, employee’s utility model, or employee’s industrial design to another person, and fails to inform the employee on keeping the information on the respective result of intellectual activity in secrecy, the right to obtain a patent for such an invention, utility model, or industrial design shall belong to the employee. In such a case the employer during the validity term of the patent shall have the right to use the employee’s invention, employee’s utility model, or employee’s industrial design in his own business under a simple (non-exclusive) license and pay remuneration to the patent holder, the amount, terms, and method of payment shall be determined by contract between the employee and the employer and in case of dispute settled by a court.

If the employer obtains a patent for an employee’s invention, employee’s utility model, or employee’s industrial design, or takes a decision to keep information on such an invention, such a utility model, or such an industrial design in secrecy and informs this to the employee or transfers the right to obtain a patent to another person or fails to obtain a patent on the basis of the application filed by him due to circumstances for which he is responsible, the employee shall have the right to remuneration. The amount of remuneration, the terms, and the procedure for payment by the employer shall be determined by a contract between him and the employee and in case of a dispute settled by a court.

The Government of the Russian Federation shall have the right to establish minimum rates of remuneration for employee’s inventions, employee’s utility models, and employee’s industrial designs.

5. An invention, utility model, or industrial design created by an employee with the use of financial, technical, or other material assets of the employer, but not in line of his employment duties or of a specific task set by the employer shall not be deemed an employee’s invention, utility model, or industrial design. The right to obtain a patent and the exclusive right to such invention, utility model, or industrial design shall belong to the employee. In this case the employer shall have the right at its option to demand the grant of a free simple (nonexclusive) license for the use of the created result of intellectual activity for his own needs during the whole validity term of the exclusive right or to reimbursement of the costs incurred by him in connection with the creation of such invention, utility model, or industrial design.

Article 1371. Invention, Utility Model, or Industrial Design Created in Performance of Work under a Contract

1. In the case when an invention, utility model, or industrial design is created in performing a contract of work and labor or a contract for performance of R&D, that does not specially provided for its creation, the right to obtain a patent and the exclusive right to such an invention, utility model, or industrial design shall belong to the contractor (the performer) unless the contract between him and the customer provides otherwise.

In this case the customer shall have the right, unless otherwise provided by the contract, to use the invention, utility model, or industrial design created in such manner for the purposes to which the respective contract was concluded under a simple (non-exclusive) license during the whole validity term of the patent without payment of supplementary remuneration for this use. In case of transfer by the contractor (the performer) of the right to obtain a patent or alienation of the patent as such to another person, the customer shall retain the right of use of the invention, utility model or industrial design on the aforesaid terms.

2. In the case when under a contract between a contractor (a performer) and a customer the right to obtain a patent or an exclusive right to an invention, utility model, or industrial design has been transferred to the customer or to a third party designated by him, the contractor (the performer) shall have the right to use the created invention, utility model, or industrial design for his own needs under a free simple (non-exclusive) license during the whole validity term of the patent unless provided otherwise by the contract.

3. The author of an invention, utility model, or industrial design indicated in Paragraph 1 of the present Article who is not the patent holder shall be paid remuneration under Paragraph 4 of Article 1370 of the present Code.

Article 1372. Industrial Design Made on Order

1. In the case an industrial design is made under a contract, the subject of which was its creation (on order), the right to obtain a patent and the exclusive right to such an industrial design shall belong to the customer, unless the contract between the contractor (the performer) and the customer provides otherwise.

2. In the case when the right to obtain a patent and the exclusive right to an industrial design under Paragraph 1 of the present Article belongs to the customer, the contractor (the performer) shall have the right, to the extent that the contract does not provide otherwise, to use such industrial model for its own needs under a free simple (nonexclusive) license during the whole validity term of the patent.

3. In the case when under a contract between the contractor (performer) and the customer the right to be granted a patent and the exclusive right to an industrial design belongs to the contractor (the performer), the customer shall have the right to use the industrial design for his own needs under a free simple (non-exclusive) license during the whole validity term of the patent.

4. The author of a utility model created on order who is not the patent holder shall be paid remuneration under Paragraph 4 of Article 1370 of the present Code.

Article 1373. Invention, Utility Model, or Industrial Design Created in Performance of Work under a State or Municipal Contract

1. The right to obtain a patent and the exclusive right to an invention, utility model, or industrial design created in performance of work under a State or municipal contract for state or municipal needs shall belong to the organization performing the state or municipal contract (the performer) unless the State or municipal contract stipulates that this right shall belong to the Russian Federation, the subject of the Russian Federation or the municipal unit on behalf of which the State or municipal customer acts, or jointly to the performer and the Russian Federation, the subject of the Russian Federation or the municipal unit.

2. If in accordance with a state or municipal contract the right to obtain a patent and the exclusive right to an invention, utility model, or industrial design belongs to the Russian Federation or municipal unit, the State or municipal customer may file an application for the patent grant within six months from the date of his written notification by the performer of the receipt of a result of intellectual activity eligible for legal protection as an invention, utility model, or industrial design. If within the said period the State or municipal customer fails to file an application the right to obtain of the patent shall belong to the performer.

3. If the right to obtain a patent and the exclusive right to an invention, utility model, or industrial design under a State or municipal contract, belongs to the Russian Federation, to a subject of the Russian Federation, or to a municipal unit, the performer shall be obliged, by the conclusion of corresponding agreements with his employees and third persons, to obtain all the rights and ensure their being retained for transfer respectively to the Russian Federation, the subject of the Russian Federation, or the municipal unit. In such case, the contractor shall have the right to remuneration for covering expenses incurred by him in connection with obtaining the respective rights from third persons.

4. If a patent for an invention, utility model, or industrial design created in the performance of work under a State or municipal contract for State or municipal needs belongs under Paragraph 1 of the present Article not to the Russian Federation, not to a subject of the Russian Federation, and not to a municipal unit, the patent holder on demand of the State or municipal customer shall be obliged to grant to the person indicated by him a free simple (non-exclusive) license for the use of the invention, utility model or industrial design for state or municipal needs.

5. If a patent for an invention, utility model or industrial design created in the performance of work under a State or municipal contract for State needs is granted jointly in the name of the performer and the Russian Federation, or of the performer and a subject of the Russian Federation, or of the performer and a municipal unit, the State or municipal customer shall have the right to obtain a free simple (nonexclusive) license for the use of such invention, utility model, or industrial design for the purpose of performing work or supplying products for State or municipal needs after having notified the performer of this.

6. If a performer who has obtained a patent for an invention, utility model or industrial design under Paragraph 1 of the present Article in his own name, takes a decision for the pre-term termination of the validity of the patent, he shall be obliged to notify the State or municipal customer and on its demand to transfer the patent on a free-of-charge basis to the Russian Federation, subject of the Russian Federation, or municipal unit.

In the case of adoption of a decision on the pre-term termination of the validity of a patent granted under Paragraph 1 of the present Article in the name of the Russian Federation, a subject of the Russian Federation, or a municipal unit, the State or municipal customer shall inform the performer and on his demand to transfer to him the patent on a free-of-charge basis.

7. The author of an invention, utility model, or industrial design indicated in Paragraph 1 of the present Article who is not the patent holder shall be paid remuneration under Paragraph 4 of Article 1370 of the present Code.

§ 5. Patent Grant

1. Application for a Patent Grant, Amendment, and Withdrawal Thereof

Article 1374. Filing of Application for the Grant of a Patent for an Invention, a Utility Model, or an Industrial Design

1. An application for the grant of a patent for an invention, utility model, or industrial design shall be filed with the federal executive authority for intellectual property by a person entitled to obtain a patent under the present Code (the applicant).

2. A request for the grant of a patent for an invention, utility model, or industrial design shall be presented in the Russian. Other documents of the application shall be presented in the Russian or another language. If the documents of the application are presented in another language, a translation into the Russian shall be attached to the application.

3. A request for the grant of a patent for an invention, utility model, or industrial design shall be signed by the applicant and, in case of filing of a request through a patent attorney or other representative, by the applicant or his representative filing the application.

4. Requirements for the documents of an application for grant a patent for an invention, utility model or industrial design shall be determined on the basis of the present Code by the federal executive authority responsible for normative and legal regulation in the area of intellectual property.

5. The document confirming the payment of the prescribed patent fee or document confirming the grounds for non-payment of the patent fee or its reduction, or the delay for its payment shall be attached to the application for the grant of a patent for an invention, utility model, or industrial design.

Article 1375. Application for the Grant of a Patent for an Invention.

1. An application for the grant of a patent for an invention (an application for an invention) shall relate to one invention or to a group of inventions so linked as to form a single inventive concept (requirement of unity of the invention).

2. An application for an invention shall contain:

1) the request for the grant of a patent, stating the name of the author of the invention and of the person in whose name the patent is sought and also of the legal or actual residence of each of them;

2) the description of the invention, disclosing it in sufficient details for it to be carried out;

3) the claims stating its essential features and fully supported by description;

4) the drawings and other materials, if they are necessary for understanding the essence of the invention;

5) the abstract.

3. The filing date of an application for an invention shall be the date of receipt by the federal executive authority for intellectual property of an application containing a request for the patent grant, a description of the invention, and drawings if there is a reference to them in the description, and if the all the said documents were not presented at the same time, the date of receipt of the final document.

Article 1376. Application for the Grant of a Patent for a Utility Model

1. An application for the grant of a patent for a utility model (application for a utility model) shall relate to one utility model or to a group of utility models so linked as to form a single creative concept (requirement of unity of the utility model).

2. An application for a utility model shall contain:

1) the request for the grant of a patent, stating the name of the author of the utility model and of the person in whose name the patent is sought and also of the place of residence or place of location of each of them;

2) the description of the utility model, disclosing in sufficient details for it to be carried out;

3) the claims stating its essential features and fully supported by description;

4) the drawings if they are necessary for understanding the essence of the utility model;

5) the abstract.

3. The filing date of an application for a utility model shall be the date of receipt by the federal executive authority for intellectual property of an application containing a request for the patent grant, a description of the utility model, and drawings, if there is a reference to them in the description, and, if the all said documents were not presented at the same time, the date of receipt of the final document.

Article 1377. Application for the Grant of a Patent for an Industrial Design

1. An application for the grant of a patent for an industrial design (an application for an industrial design) shall relate to one industrial design or to a group of industrial designs so closely associated as to form a single creative concept (requirement of unity of the industrial design).

2. An application for an shall contain:

1) a request for the grant of a patent, stating the name of the author of the industrial design and of the person in whose name the patent is sought and also of the place of residence or place of location of each of them;

2) a set of representations of the article giving a full and detailed perception of the outward appearance of the article;

3) a drawing of the general view of the article, and ergonomic scheme, a flow chart if they are needed for the disclosure of the essence of the industrial design;

4) the description of the industrial design;

5) the list of the essential features of the industrial design.

3. The filing date of an application for an industrial design shall be the date of receipt by the federal executive authority for intellectual property of an application containing a request for the grant of a patent, a set of representations of the article, a description of the industrial design, and a list of the essential features of the industrial design and, if all the said documents were not presented at the same time, the date of receipt of the final document.

Article 1378. Amendments of an Application for an Invention, Utility Model, or Industrial Design

1. The applicant shall have the right to make corrections and clarifications, including by the way of submission of supplementary materials, in the documents of the application for an invention, utility model, or industrial design prior to the decision on the grant of a patent or decision on the refusal of patent grant if these corrections and clarifications are not changing the essence of the claimed invention, utility model, or industrial design.

Supplementary materials shall change the essence of the claimed invention or utility model if they contain features that shall be included into the claims of the invention or utility model, which were not disclosed on the priority date in the documents provided for a basis for its establishment, or in the claims for the invention or utility model in event that on the priority date the application contained the claims of the invention or utility model.

Supplementary materials shall change the essence of the claimed industrial design if they contain features that are to be included in the list of essential features of the industrial design and that were missing on the filing date of the application in the representation of the article.

2. Change of the applicant including in case of transferring the right to be granted the patent to another person or in case of the change of the name of the applicant and also correction of obvious and technical errors in the documents of the application may be done prior to the registration of the invention, utility model, or industrial design.

3. In the event that changes in documents of an application were made on the initiative of an applicant within two months from the filing date, no patent fee shall be charged for such changes.

4. Changes made by the applicant in the documents of an application for an invention shall be taken into consideration in the publication of information on the application, if such changes were presented to the federal of executive authority for intellectual property within twelve months after the filing date of the application.

Article 1379. Conversion of an Application for an Inventions, Utility Model, or Industrial Design

1. Prior to the publication of information on an application for an invention (Paragraph 1 of Article 1385), but not later than the date of the decision to grant a patent for an invention (Paragraph 1 of Article 1387), the applicant shall have the right to convert it into an application for a utility model by submitting the respective request to the federal executive authority for intellectual property, with the exception of the case when the declaration on a proposal to conclude a contract on alienation of the patent provided for by Paragraph 1 of Article 1366 of the present Code is attached to the application.

2. Conversion of an application for a utility model into an application for an invention is allowed prior to the date of a decision on the grant of a patent and in the case a decision on refusal to grant a patent, prior to the possibility of submitting an objection against this decision as provided by the present Code is exhausted.

3. In case of the conversion of an application for an invention or utility model under Paragraphs 1 and 2 of the present Article, the priority date of the invention or utility model and filing date shall be not changed.

Article 1380. Withdrawal of an Application for an Invention, Utility Model, or Industrial Design

An applicant shall have the right to withdraw an application filed by him for an invention, utility model or industrial design not later the registration of the invention, utility model, or industrial design in the respective Register.

2. Priority of an Invention, Utility Model, and Industrial Design

Article 1381. Establishment of the Priority of an Invention, Utility Model or Industrial Design

1. The priority of an invention, utility model, or industrial design shall be established as per the date of filing with the federal executive authority for intellectual property of an application to an invention, utility model, or industrial design.

2. The priority of an invention, utility model, or industrial design shall be determined by the date of receipt of supplementary materials if they are submitted by the applicant as a separate application provided that it has been filed within three month following the date of receipt by the applicant of notification from the federal executive authority for intellectual property to the effect that supplementary materials cannot be taken into consideration since they are not recognized as changing the essence of the claimed solution and on condition that on the filing date of such an separate application, the application, containing the aforementioned supplementary materials has not been withdrawn and has not be recognized as withdrawn.

3. The priority of an invention, utility, model, or industrial design, shall be established as per the filing date by the same applicant to the federal executive authority for intellectual property of an earlier application disclosing this invention, utility model or industrial design on the condition that the earlier application has not been withdrawn and has not been recognized as withdrawn on the date of filing the application for which such priority is requested and the application for which priority is requested was filed within twelve months from the date of the earlier application for the invention or six months from the date of the earlier application for a utility model or industrial design.

Upon the filing of an application for which priority is requested, the earlier application shall be considered as withdrawn.

Priority may not be established as per the filing date of an application for which an earlier priority has already been requested.

4. The priority of an invention, utility model, or industrial design under a divisional application shall be established as per the filing date by the same applicant to the federal executive authority for intellectual property of the initial application, disclosing this invention, utility model, or industrial design, and in the presence of the right to get an earlier priority under the original application, as per the date of this priority on the condition that the filing date of the divisional application the original application for an invention, utility model, or industrial design has not been withdrawn and has not been recognized as withdrawn, and a divisional application was filed before the exhaustion of the possibility provided for by the present Code, for lodging appeals against a decision to refuse to grant a patent under the original application or prior to the date of registration of the invention, utility model, or industrial design, if a decision on the patent grant has been adopted on the basis of the original application.

5. The priority of an invention, utility model, or industrial design may be established on the basis of several earlier applications or supplementary materials thereto in compliance with conditions stipulated by Paragraphs 2, 3, and 4 of the present Article and by Article 1382 of the present Code, respectively.

1. The priority of an invention, utility model, or industrial design shall be established as per the date of the first application for the invention, utility model, or industrial design filing in a Member-State of the Paris Convention for the Protection of Industrial Property (Convention priority), subject to the filing with the federal executive authority for intellectual property of an application for an invention or a utility model within twelve months from the above date and an application for an industrial design - within six months from the above date. If due to circumstances beyond the applicant, an application for which Convention priority is sought cannot be filed within the indicated time period, such period may be extended by the federal executive authority for intellectual property, but for not more than two months.

2. An applicant willing to use the right of Convention priority with respect to an application for a utility model or an industrial design shall communicate thereon to the federal executive authority for intellectual property within two months from the date of filing such application and present a certified copy of the first application under Paragraph 1 of the present Article within three months from the date of filing with the aforesaid federal authority of the application in which wiliness to use the right of Convention priority with respect to an application for an invention shall communicate thereon to the federal executive authority for intellectual property and to present to this federal authority a certified copy of the first application within six months from the date of its submission to the patent office of the member-state of the Paris Convention for the Protection of Industrial Property.

In case of failure to present a certified copy of the first application within the aforementioned time period the right of priority may nevertheless be recognized by the federal executive authority for intellectual property on request of the applicant submitted by him to this federal authority before the expiration of the aforementioned time limit provided that a copy of the first application has been requested by the applicant from the patent office with which the first application was filed within fourteen months from the date of filing of the first application and is presented to the federal executive authority for intellectual property within two months from the date of its receipt by the applicant.

The federal executive authority for intellectual property shall have the right to demand from the applicant the presentation of a translation into Russian of the first application for the invention only in the case when the verification of the validity of the claim to priority of the invention involves examination of the patentability of claimed invention.

Article 1383. Consequences of the Coincidence of the Priority Dates of an Invention, Utility Model, or Industrial Design

1. In the event that the examination process reveals that several applicants have filed applications for identical inventions, utility models, or industrial designs, and that these applications have the same priority date, a patent for the invention, utility model, or industrial design shall be granted only on one of these applications to the person determined by agreement among the applicants.

Within twelve months from the date of receipt from the federal executive authority for intellectual property of the respective notification, the applicants shall inform to the said federal agency of the agreement reached among them.

Upon the grant of the patent on one of the applications, all the authors indicated in the applications shall be recognized as the co-authors with respect to identical inventions, utility models, or industrial designs.

In the case when such applications having the same priority date for identical inventions, utility models, or industrial designs have been filed by the same applicant, the patent shall be granted on the application chosen by the applicant. The applicant shall inform of his choice within the time and in the manner provided for by the second subparagraph of the present Paragraph.

If the aforementioned communication or request for extending the established time period fails to be received by the federal executive authority for intellectual property from the applicants within the established time period in the manner provided for by Paragraph 5 of Article 1386 of the present Code, the applications shall be considered as withdrawn.

2. In case of coincidence of the priority dates of an invention and an identical utility model, with respect to which applications for patents grant have been filed by the same applicant, after grant of a patent on one of these applications, grant of a patent on the other application shall be possible only on the condition of submission to the federal executive authority for intellectual property by the holder of the earlier patent for an identical invention or identical utility model of a request for the termination of the validity of this patent. In this case the validity of the earlier patent shall be terminated from the date of publication of information on the patent grant on the other application under Article 1394 of the present Code. Information on the grant of a patent on an application for an invention or utility model and information on the termination of the validity of the earlier patent shall be published concurrently.

3. Examination of an Application for the Grant of a Patent for an Invention, Utility Model, or Industrial Design. Temporary Legal Protection of an Invention, Utility Model or Industrial Design

Article 1384. Formal Examination of an Application for an Invention

1. Formal examination of an application for an invention that has been filed with the federal executive authority for intellectual property shall be carried out. In the process of such examination the presence of the documents provided for by Paragraph 2 of the 1375 of the present Code and their conformity to prescribed requirements shall be verified.

2. In the case when the applicant has presented supplementary materials to the application for an invention under Paragraph 1 of Article 1378 of the present Code it shall be ascertained whether they change the essence of the claimed invention.

Supplementary materials that change the essence of the claimed invention shall not be taken into account for the purposes of examination of the application for the invention, but may be filed by the applicant as separate application. The federal executive authority for intellectual property shall inform it to the applicant.

3. The federal executive authority for intellectual property shall notify the applicant of a favorable result of formal examination and of the filing date of the application for the invention, promptly after the completion of formal examination.

4. If an application for an invention fails to meet the prescribed requirements for documents of the application, the federal executive authority for intellectual property, shall invite the applicant to furnish corrected or missing documents within two months from the date of the receipt by him of such invitation. If the applicant fails to furnish the documents in question or to file a request for extending this period within the prescribed time limit, the application shall be considered as withdrawn. This time limit may be extended by the federal executive authority, but by no more than ten months.

5. If an application for an invention has been filed with non-fulfillment of the requirement of unity of invention (Paragraph 1 of Article 1375), the federal executive authority for intellectual property shall invite of the applicant to communicate, within two months from the date of receipt by him of the respective notification, which of the claimed inventions should be examined, and if necessary, to correct the documents of the application. Other inventions claimed in the original application may be submitted as divisional applications. If the applicant fails to communicate within the prescribed time limit which of the claimed inventions should be examined or fails to furnish, if necessary, the appropriate documents, the examination of the invention shall carried out in respect of the invention that is indicated first in the claims.

Article 1385. Publication of Information on the Application for an Invention

1. The federal executive authority for intellectual property, upon the expiration of eighteen months from the filing date of an application for an invention, in respect of which the formal examination finding is favorable, shall publish information on the application for the invention in the official gazette. The list of the published data shall be determined by the federal executive authority responsible for normative and legal regulation in the area of intellectual property.

The author of the invention may waive his right to be indicated as such in the published information on the application for an invention.

At the request of an applicant filed before the expiration of twelve months from the filing date of the application for an invention, the federal executive authority for intellectual property may publish information on the application for an invention before the expiration of eighteen months from the day of its filing.

Publication shall not be made if before the expiration of twelve months from the day of filing the application for the invention it was withdrawn or recognized as withdrawn or if on its basis the registration of the invention was effected.

2. Any person after publication of the information on the application for the invention shall have the right to learn the documents of the application unless the application has been withdrawn or recognized as withdrawn on the date of publication of information on invention. The procedure governing access to the documents of the application and making copies of such documents shall be established by the federal of executive authority responsible for normative and legal regulation in the area of intellectual property.

3. In case of publication of information on an application for an invention, which application on the date of publication had been withdrawn or recognized as withdrawn, such information shall not be included in the prior art in the processing of subsequent applications of the same applicant filed with the federal executive authority for intellectual property before the expiration of twelve months from the date of publication of information on the application for an invention.

Article 1386. Substantive Examination of an Application for an Invention

1. At the request of the applicant or of third parties, which may be filed with the federal executive authority for intellectual property when filing of the application for an invention or within three years from the filing date of this application, and on the condition of successful completion of formal examination of this application, substantive examination of the application for an invention shall be conducted. The federal executive authority for intellectual property shall notify the applicant of request received from third parties.

The time period for filing the request for the conduct of substantive examination of an invention may be extended by the federal executive authority for intellectual property at the request of the applicant filed before the expiration of this time period, but for not more than two months, provided that the request be accompanied by a document confirming payment of the patent fee.

If the request for the conduct of a substantive examination of an invention has not been filed within the prescribed time limit, the application shall be considered as withdrawn.

2. Substantive examination of an invention shall include:

a prior art search with respect to the claimed invention to check the novelty and inventive step of the invention;

checking the fulfillment of the claimed invention to the criteria of patentability stipulated by Article 1350 of the present Code.

A search with respect to the claimed invention, relating to the objects indicated in Paragraph 4 of Article 1349 and in Paragraphs 5 and 6 of Article 1350 of the present Code, shall not be conducted. The federal executive authority for intellectual property shall notify it to the applicant before the expiration of six months from the date of the start of substantive examination of the invention.

The procedure for conduct of the search and the presentation of the search report shall be established by the federal executive authority responsible for normative and legal regulation in the area of intellectual property.

3. Upon the expiration of six months from the date of the start of the substantive examination of the application for an invention, the federal executive authority for intellectual property shall send to the applicant a search report, unless the application claims a priority earlier than the filing date of the application and if the request for the conduct of substantive examination of the application for the invention was filed on the filing date of the application.

The time period for sending the applicant a search report may be extended by the federal executive authority for intellectual property if the necessary information source has to be obtained from other organizations in case when information is missing in the collections of the said federal authority or the characterization of the claimed invention in such as to make a search impossible under the established procedure. The said federal authority shall notify the applicant of the extension of the time period for sending the search report and of the reasons for of extension.

4. The applicant and third persons shall have the right to request for the conduct for an application for an invention that has passed formal examination with a favorable result, of an prior-art search in order to determine whether the claimed invention meets the criteria of novelty and inventive step. The procedure and modalities for the conduct of such a search and communication of its results shall be established by the federal authority responsible for normative and legal regulation in the area of intellectual property.

5. In the process of substantive examination of an application for an invention the federal executive authority for intellectual property may request the applicant furnishing supplementary materials (including amended claims for the invention) without which the conduct of examination is impossible. In this case supplementary materials without changing the essence of the invention shall be presented within two months from the day of receipt by the applicant of the request or copy of materials cited in request, provided that the applicant has requested the aforesaid copies within one month from the day of receipt by him of the request from the said federal authority. If within the established time limit the applicant fails to present the requested materials or a request on the extension of this time limit, the application shall be considered as withdrawn. The time limit established for presentation by the applicant of the requested materials may be extended by the said federal authority not for more than ten months.

Article 1387. Decision on the Grant of a Patent for an Invention or of Refusal of its Issuance

1. If as the result of the substantive examination of an application for an invention is that the claimed invention, as defined in the claims by the applicant meets the criteria of patentability under Article 1350 of the present Code, the federal executive authority for intellectual property shall decide to grant a patent for the invention corresponding to the said claims. The priority date of the invention shall be indicated in the decision.

If in the process of substantive examination of the invention it is established that the claimed invention, as defined in the claims by the applicant, does not meet the criteria of patentability under Article 1350 of the present Code, the federal executive authority for intellectual property shall decide to refuse the grant of a patent.

Before a decision on the grant of a patent or on the refusal of the grant of a patent is taken, the federal executive authority for intellectual property shall send the applicant a notification of the results of the check of the patentability of the claimed invention along with an invitation to present the comments on the motivation presented in the notification. The counter-arguments of the applicant shall be taken into account when a decision is taken if they are presented within six months from the date of receipt of notification.

2. An application for an invention shall be recognized as withdrawn under the provisions of the present Chapter on the decision of the federal executive authority for intellectual property with the exception of the case when it is withdrawn by the applicant.

3. A decision of the federal executive authority for intellectual property on refusal of the grant of a patent for an invention, on the grant of a patent for an invention, or on recognition of an application for an invention as withdrawn, may be opposed by the applicant by submitting an appeal to the Chamber for Patent Disputes within six months from the date of receipt of the decision or of copies of materials requested from the aforesaid federal authority that were cited in notice of opposition and referred to in the decision on refusal of the grant of a patent, provided that the applicant requested copies of these materials within two months from the date of receipt of the decision taken in respect on the application for the invention.

Article 1388. Right of the Applicant to Learn the Patent Materials

The applicant shall have the right to learn all the materials related to the patenting of inventions to which there is a reference in requests, reports, decisions, notices, and other documents received from the federal executive authority for intellectual property. Copies of the patent documents requested by the applicant from the said federal authority shall be sent to him within one month from the day of receipt of the request.

Article 1389. Reinstatement of Missed Time Limits during Examination of an Application for an Invention

1. A basic or extended time limit missed by the applicant for furnishing of documents or supplementary materials at the request of the federal executive authority for intellectual property (Paragraph 4 of Article 1384 and Paragraph 5 of Article 1386), the time limit for submission of a request for the conduct of substantive examination of the application for an invention (Paragraph 1 of Article 1386), and the time limit for submission of an appeal to the Chamber for Patent Disputes (Paragraph 2 of Article 1387) may be reinstated by the said federal authority, provided that the applicant presents proof of the validity of the reasons for the delay and a document confirming payment of the patent fee.

2. The request for the reinstatement of a missed time period shall be filed by the applicant within twelve months following the expiry of the established time limit. The request shall be filed with the federal executive authority for intellectual property at the same time with:

documents or supplementary materials for the presentation of which the reinstatement of the time period is necessary or with a request for extending the time limit for the furnishing of these documents or materials;

a request for the conduct of substantive examination of the application for an invention;

appeal to the Chamber for Patent Disputes.

Article 1390. Examination of an Application for a Utility Model

1. In respect of the application for a utility model filed with the federal executive authority for intellectual property, an examination shall be conducted in the process of which the presence of the documents provided for by Paragraph 2 of Article 1376 of the present Code shall be verified, as well as their compliance with established requirements and the meeting the requirement of unity of the utility model (Paragraph 1 of Article 1376) and it also shall be established whether the claimed solution relates to the technical decisions which are protectable as a utility model.

Check of the claimed utility model to the criteria of patentability provided for by Paragraph 1 of Article 1351 of the present Code shall not be verified in the process of examination.

The provisions under Paragraphs 2, 4, and 5 of Article 1384, Paragraphs 2 and 3 of Article 1387, 1388, and 1389 of the present Code respectively shall be applied to the conduct of examination of an application for a utility model.

2. The applicant and third persons shall have the right to request the conduct of an prior art search with respect to a claimed utility model in comparison with which the patentability of the utility model shall be checked. The procedure and conditions for the conduct of the prior art search and the communicating of information on results shall be established by the federal executive authority responsible for normative and legal regulation in the area of intellectual property.

3. If the claims for a utility model proposed by the applicant include the features missing in the description of the utility model and features missing in the claims of the utility model (if the application for the utility model on the filing date contained such claims), the federal executive authority for intellectual property shall invite the applicant to exclude the said features from the claims.

4. If as the result of examination of an application for a utility model it is established that the application was filed for a technical solution is protectable as a utility model and the documents of the application meet the established requirements, the federal executive authority for intellectual property shall decide to grant of a patent with a filing date of the application for a utility model and a priority date is taken.

If as the result of the examination it is established that an application for a utility model has been filed for a solution not protectable as a utility model, the federal executive authority for intellectual property shall decide on refusal to grant a patent for a utility model.

5. In the case when, in the process of examination of an application for a utility model the federal executive authority for intellectual property finds that the information contained in it constitutes a state secret, the documents of the application shall be classified as secret by the procedure provided for by the official secrets legislation. In this case the applicant shall be notified of the possibility of withdrawal of the application for a utility model or of conversion into an application for a secret invention. The examination of such application shall be suspended pending until the receipt from the applicant of the appropriate request or until the declassifying of the application.

Article 1391. Examination of an Application for an Industrial Design

1. In respect of the application for an industrial design filed with the federal executive authority for intellectual property a formal examination shall be conducted in the process of which the presence of the documents provided for by Paragraph 2 of Article 1377 of the present Code and their correspondence to established requirements shall be verified.

In case of a favorable result of formal examination, substantive examination of the application for an industrial design shall be conducted, including the check of the claimed industrial design the criteria of patentability under Article 1352 of the present Code.

2. The provisions provided for by Paragraphs 2-5 of Article 1384, by Paragraph 5 of Article 1386, by Paragraph 3 of Article 1387, and by Articles1388-1389 of the present Code shall be applied respectively in the conduct of the formal examination of an application for an industrial design and the substantive examination of this application.

Article 1392. Provisional Legal Protection of an Invention

1. An invention for which an application has been filed with the federal executive authority for intellectual property shall enjoy provisional legal protection within the scope of the published claims of the invention, but not more than in the scope determined by the claims contained in the decision of the aforesaid federal authority on the grant of a patent for the invention, during period between the date of publication of information on the application (Paragraph 1 of Article 1385) and the date of publication of information on the grant of a patent (Article 1394).

2. Provisional legal protection shall be considered as not to have occurred if the application for invention was withdrawn or recognized as withdrawn or if, with respect to the application for invention a decision on refusal to grant a patent has been taken and the possibility of filing an appeal against this decision provided for by the present Code has been exhausted.

3. Any person using the claimed invention during the period specified in Paragraph 1 of the present Article shall pay remuneration to the patent holder, after the grant of a patent. The amount of remuneration shall be determined by agreement of the parties and, in case of a dispute, by a court.

4. Registration of an Invention, Utility Model, or Industrial Design and Issuance of a Patent

Article 1393. Procedure for Official Registration of an Invention, Utility Model, or Industrial Design and Grant of a Patent.

1. On the basis of a decision on grant of a patent for an invention, utility model, or industrial design, the federal agency of executive authority for intellectual property shall register the invention, utility model, or industrial design into the respective official register – the State Register of Inventions of the Russian Federation, the Official Register of Utility Models of the Russian Federation, or the Official Register of Industrial Designs of the Russian Federation and shall grant a patent for an invention, utility model, or industrial design.

Where patent protection is sought by several persons, only one patent shall be granted.

2. The official registration of an invention, utility model, or industrial design shall be conducted and the patent shall be granted provided by payment of the prescribed patent fee. In case of failure to present by the applicant under the established procedure, a document confirming the payment of the patent fee, registration of the invention, utility model, or industrial design and the patent shall not be granted and the respective application shall be considered as withdrawn.

3. The form of the patent for an invention, utility model or industrial design and the list of the particulars contained therein shall be determined by the federal executive authority responsible for normative and legal regulation in the area of intellectual property.

4. The federal executive authority for intellectual property shall rectify obvious and technical errors in the granted patent for an invention, utility model, or industrial design, and/or in the corresponding official register.

5. The federal executive authority for intellectual property shall publish in the official bulletin the information on any changes of records in the state registers.

Article 1394. Publication of Information on the Grant of a Patent for an Invention, a Utility Model, or an Industrial Design

1. The federal executive authority for intellectual property shall publish in the official bulletin the information on the grant of a patent, utility model, or industrial design including the name of the author (unless the author has waived the right to be mentioned as such), the name of the patent holder, the title and claims of the invention or utility model or list of essential features of a utility model and its graphic representation.

The federal executive authority responsible for normative and legal regulation in the area of intellectual property shall determine the particulars of the published information.

2. After making publication, under the present Article, of information on the grant of a patent for an invention, utility model, or industrial design, any person shall have the right to learn the documents of the application and the search report.

The procedure for learning the documents of the application and the search report shall be determined by the federal executive authority responsible for normative and legal regulation in the area of intellectual property.

Article 1395. Patenting Inventions or Utility Models in Foreign States and in International Organizations

1. An application for the grant of a patent for an invention or utility model created in the Russian Federation may be filed with a foreign state or with an international organization upon the expiry of six months from the day of filing of the respective application with the federal executive authority for intellectual property, provided that within the said period the applicant has not been informed that the application contains information constituting an official secret. An application for an invention or utility model may be filed before the said time limit, but after the conduct at the request of the applicant of a check for presence in the application of information constituting an official state secret. The procedure for conducting a check of the application containing information constituting an official secret shall be determined by the Government of the Russian Federation.

2. Patenting under the Patent Cooperation Treaty or the Eurasian Patent Convention of an invention or utility model created in the Russian Federation shall be allowed without the prior filing of the respective application with the federal executive authority for intellectual property, provided that the application under the Patent Cooperation Treaty (the international application) was filed with the federal executive authority for intellectual property as the Receiving Office and the Russian Federation has been designated as a state in which the applicant intends to obtain a patent and provided that the Eurasian application has been filed through the federal executive authority for intellectual property.

Article 1396. International and Eurasian Applications Having the Effect of the Applications Provided for by the Present Code.

1. The federal executive authority for intellectual property shall begin the processing of an international application, filed under the Patent Cooperation Treaty, for an invention or a utility model in which the Russian Federation is designated as a state in which the applicant intends to obtain a patent for an invention or utility model before the expiry of the thirty one months from the date of the priority claimed in the international application. At the request of the applicant, the international application shall be processed before the expiry of this time limit provided that the international application was filed in Russian or if the applicant before the expiry of the said time limit furnished to the federal executive authority for intellectual property of a translation into Russian of the application for the grant of a patent for the invention or utility model making part of the international application filed in a different language.

The furnishing to the federal executive authority for intellectual property of a translation into Russian of a request contained in an international application for the grant of a patent for an invention or utility model may be replaced by the submission of the request for grant of a patent provided for by the present Code.

Failure to submit the said documents are not presented within the established time limit, the validity of the international application with respect to the Russian Federation under the Patent Cooperation Treaty shall be terminated.

The time limit established by Paragraph 3 of Article 1378 of the present Code for the making changes in the documents of an application shall begin on the date of starting of processing of the international application by the federal executive authority for intellectual property of the international application in accordance with the present Code.

2. The processing of an Eurasian application for an invention having in accordance with the Eurasian Patent Convention the effect of an application for an invention provided for by the present Code shall begin from the date when the federal executive authority for intellectual property has received a certified copy of the Eurasian application from the Eurasian Patent Office. The time limit provided for by Paragraph 3 of Article 1378 of the present Code for the making changes in the documents of an application shall begin on the same date.

3. The publication of an international application in Russian by the International Bureau of the World Intellectual Property Organization pursuant to the Patent Cooperation Treaty or publication of the Eurasian application by the Eurasian Patent Office pursuant to the Eurasian Patent Convention shall replace the publication of information on the application provided for by Article 1385 of the present Code.

Article 1397. Eurasian Patent and Patent of the Russian Federation for Identical Inventions

1. In the case when a Eurasian patent and a patent of the Russian Federation for identical inventions, or an identical invention and utility model, having the same priority date belong to different patent holders, such inventions or, respectively invention and utility model may be used only if the rights of all the patent holders are observed.

2. If a Eurasian patent and a patent of the Russian Federation for identical inventions or to an identical invention and utility model having the same priority date belong to the same person, this person may grant any other person the right to use such inventions or, respectively invention and utility model under license contracts concluded on the basis of these patents.

§ 6. Termination and Reinstatement of the Validity of a Patent

Article 1398. Recognition of the Invalidity of a Patent for an Invention, Utility Model, or Industrial Design

1. A patent for an invention, utility model, or industrial design may be recognized, at any time during its period of validity as invalid in full or in part in the following cases:

1) failure of the invention, utility model, or industrial design to meet the criteria of patentability stipulated by the present Code;

2) the claims for the invention or utility model or in the list of essential features of an industrial design that were cited in the decision to grant the patent contain features that were missing on the filing date of the application in the description of the invention or the utility model and in the claims for the invention or utility model (if the application for an invention or utility model contained such claims on the filing date) or on the graphic representation of the article;

3) grant of a patent in case of several applications for identical inventions, utility models, or industrial designs having the same priority date in breach of the conditions provided for by Article 1383 of the present Code.

4) grant of a patent with an indication in it as the author or patent holder of a person who is not such under the present Code or without the indication in the patent as the author or patent holder of a person who is such under the present Code.

2. The grant of a patent for an invention, utility model or industrial design may be opposed by any person who has become aware of the violations provided for by subparagraphs 1 - 3 of Paragraph 1 of the present Article by submission of an appeal to the Chamber for Patent Disputes.

The grant of a patent for an invention, utility model or industrial design may be opposed by judicial procedure by any person who has become aware of the violations under subparagraph 4 of Paragraph 1 of the present Article.

3. A patent for an invention, utility model or industrial design shall be recognized as invalid in full or in part on the basis of a decision of the federal executive authority for intellectual property adopted in accordance with Paragraphs 2 and 3 of Article 1248 of the present Code or of a decision of a court that has entered into force.

In case of recognition of a patent for an invention, utility model, or industrial design as invalid in part, a new patent shall be granted.

4. A patent for an invention, utility model, or an industrial design that is recognized as invalid in full or in part shall be voided as of the filing date of the application for a patent.

Licensing contracts concluded on the basis of the patent later recognized as invalid shall maintain their effect to the extent that they were performed by the time of the decision on the invalidity of the patent.

5. Recognition of a patent as invalid shall signify the reversal of the decision of the federal executive authority for intellectual property on the registration of the invention, utility model, or industrial design and on the grant of a patent for the invention, utility model, or industrial design (Article 1387) and annulations of the record in the corresponding official register.

Article 1399. Pre-term Termination of the Validity of a Patent for an Invention, Utility Model, or Industrial Design

The validity of a patent for an invention, utility model, or industrial design shall be pre-term terminated:

on the basis of a request filed by the patent holder with the federal executive authority for intellectual property – from the day of receipt of such request. If a patent was granted for a group of inventions, utility models, or industrial designs, and the request of the patent holder is filed with respect to not all the objects of patent rights included in the group, the validity of the patent shall be terminated only with respect to the inventions, utility models, or industrial designs indicated in the request;

in case of failure to pay in due time the maintenance fee for an invention, utility model, or industrial design – from the date of expiry of the prescribed time limit for the payment of the maintenance fee.

Article 1400. Reinstatement of the Validity of a Patent for an Invention, Utility Model, or Industrial Design. Right of Posterior Use

1. The validity of a patent for an invention, utility model or industrial design, which was terminated because of non-payment of the maintenance patent fee in due time may be reinstated by the federal executive authority for intellectual property at the request of the person who owned the patent. The request for reinstatement of the validity of a patent shall be filed with the said federal authority within three years from the date of expiry of the time limit for payment of the patent fee but before the expiration of the period of validity of a patent provided for by the present Code. A document confirming payment in the prescribed amount of the patent fee for reinstatement of the validity of the patent shall be attached to the request.

2. The federal executive authority for intellectual property shall publish information on the reinstatement of the validity of a patent for an invention, utility model, or industrial design in the official bulletin.

3. Any person that during the period between the date of termination of the validity of the patent for the invention, utility model, or industrial design and the date of publication in the official bulletin of the federal executive authority for intellectual property of information on the reinstatement of the patent, began using the invention, utility model or industrial design or made the preparations necessary for this within the indicated time limit shall retain the right to its free posterior use without expanding the scope of such use (the right of posterior use).

§ 7. Peculiarities of Legal Protection and Use of Secret Inventions

Article 1401. Filing and Processing of Applications for the Grant of a Patent for a Secret Invention

1. Filing of an application for the grant of a patent for a secret invention (an application for a secret invention), examination and processing of such an application shall be conducted in accordance with the procedure established by legislation on the official secrets.

2. Applications for secret inventions classified by degree of secrecy "extraordinary important" or "top secret", as well as for secret inventions in the field of armaments and military technology, intelligence, counterintelligence, operative and investigative activity and classified as "secret" shall be filed, depending upon the respective subject mater with the federal executive authority authorized by the Government of the Russian Federation, the State Corporation on Nuclear Power (Rosatom) (the authorized agencies). Applications for other secret inventions shall be filed with the federal executive authority for intellectual property.

3. If in the course of examination the federal executive authority for intellectual property of an application for an invention it is found that the information contained therein constitutes an official secret, such application shall be classified as secret under the procedure established by the legislation on official secrets and shall be considered to be an application for a secret invention.

Classifying as secret of the application filed by a foreign citizen or foreign legal entity shall not be allowed.

4. In processing of an application for a secret invention the provisions of Articles 1384, 1386-1389 of the present Code shall be applied, respectively. There shall not be publication of information on the application for an invention provided for by Paragraphs 1 and 2 of Article 1385 of the present Code.

5. In the determination of novelty of a secret invention, the secret inventions patented in the Russian Federation and secret inventions to which inventor's certificates have been granted in the USSR shall also be included in the prior art (Paragraph 2 of Article 1350), provided that the classification rating of secrecy for these inventions is not higher than that of the invention, whose novelty is being determined.

6. The appeal against a decision taken on the application for a secret invention by an authorized agency shall be considered under the procedure established by it. A decision taken on such an appeal may be contested in the court.

7. The provisions of Article 1377 of the present Code on the conversion of an application for an invention into an application for a utility model shall not be applied to applications for secret inventions.

Article 1402. Official Registration of a Secret Invention and the Grant of a Patent. Disclosure of Information on a Secret Invention

1. The official registration of a secret invention in the Official State Register of Inventions of the Russian Federation and grant of a patent for a secret invention shall be carried out by the federal executive authority for intellectual property, or, if the decision to grant a patent for a secret invention has been taken by an authorized agency, by the said agency. An authorized agency that has registered a secret invention and granted a patent for a secret invention shall notify the federal executive authority for intellectual property to that effect.

The authorized agency that has registered a secret invention and granted a patent for it shall rectify obvious and technical errors in the patent for the secret invention and/or into the Official Register of Inventions of the Russian Federation.

2. Information on applications and patents for secret inventions as well as changes in the registers relating to secret inventions shall not be published in the Official Register of Inventions of the Russian Federation. Any disclosure of information about such patents shall be in line with the legislation on the official secrets.

Article 1403. Change of the Classification Rating of Secrecy and Declassification of Inventions

1. Change in classification rating of secrecy and declassification of inventions as well as change or removal of secrecy classification stamps from the documents of an application and a patent for a secret invention shall be carried out under the procedure established by the legislation on official secrets.

2. In case of raising the classification rating of secrecy of an invention, the federal executive authority for intellectual property shall communicate the documents of the application for a secret invention depending on the subject matter to the appropriate authorized agency. Subsequent processing of an application proceedings in respect of which at the time of raising the classification rating of secrecy has not been completed by the said federal authority shall be carried out by the authorized agency. In case of reduction of the classification rating of secrecy of an invention, the subsequent processing of an application for the secret invention shall be carried out by the same authorized agency that previously processed the application.

3. In case of declassification of an invention the authorized agency shall communicate the declassified documents of the application to the federal executive authority for intellectual property. The subsequent processing of an application proceedings in respect of which has not been completed before the time of declassification by the authorized agency shall be carried out by the said federal authority.

Article 1404. Recognition of the Invalidity of a Patent for a Secret Invention

An appeal against the grant by an authorized agency of a patent for a secret invention on the grounds provided for in subparagraphs 1 - 3 of Paragraph 1 of Article 1398 of the present Code shall be submitted to this authorized agency and shall be processed in accordance with its procedure. The decision of the authorized agency in respect of which an appeal shall be approved by the head of the said agency, shall become effective from the date of such approval and may be contested in the court.

Article 1405. Exclusive Right to a Secret Invention

1. The use of a secret invention and the disposition of the exclusive right to a secret invention shall conform to the legislation on official secrets.

2. A contract on alienation of a patent as well as a license contract for the use of a secret invention shall be registered in the agency that granted the patent for the secret invention or its legal successor and, in the absence of a legal successor, in the federal executive authority for intellectual property.

3. A public offer to conclude a contract on alienation of a patent and a declaration on open license provided for respectively by Paragraph 1 of Article 1366 and Paragraph 1 of Article 1368 of the present Code are not allowed with respect to a secret invention.

4. A compulsory license provided for by Article 1362 of the present Code shall not be granted with respect to a secret invention.

5. The activities provided for by Article 1359 of the present Code, as well as the use of a secret invention by a person that was not aware and could not be reasonably aware of the existence of a patent for the given invention shall not be deemed as an infringement of the exclusive right of the holder of a patent for a secret invention. Following the declassification of the invention or notification of the said person by the patent holder on the existence of a patent for the particular invention such person shall be obligated to cease using the invention and to conclude a license contract with the patent holder except the case where the right of prior use has been existed.

6. Levy of execution on the exclusive right to a secret invention is not allowed.

§ 8. Enforcement of the Rights of Inventors and Patent Holders

Article 1406. Disputes Connected With the Protection of Patent Rights

1. Disputes connected with the protection of patent rights shall be settled by a court. Such disputes include in particular, disputes over:

1) the authorship of an invention, utility model, or industrial design;

2) the identification of the patent holder;

3) infringement of the exclusive right to an invention, utility model, or industrial design;

4) the conclusion, on the execution, on the amendment, and on the termination of contracts for the transfer of an exclusive right (or alienation of a patent) and license contracts for the use of an invention, utility model, or industrial design;

5) the right of prior use;

6) the right of posterior use;

7) the amount, time, and procedure for payment of remuneration to the author of an invention, utility model, or industrial design under the present Code;

8) the amount, time and procedure for payment of the remuneration provided for by the present Code.

2. In the cases listed in Articles 1387, 1390, 1391, 1398, 1401, and 1404 of the present Code, enforcement of patent rights shall be effected under administrative procedure in accordance with Paragraphs 2 and 3 of Article 1248 of the present Code.

Article 1407. Publication of a Decision of a Court on Infringement of a Patent

The patent holder shall have the right, under subparagraph 5 of Paragraph 1 of Article 1252 of the present Code, to request the publication in the official bulletin of the federal executive authority for intellectual property of a decision of a court on the unlawful use of an invention, utility model, industrial design or other infringement of his rights under Paragraph 1 of Article 1251 of the present Code.